Alcon Inc.

Patent Trials and Appeals Board

Nov 9, 2021

IPR2021-00898 (P.T.A.B. Nov. 9, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Date: November 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
JOHNSON & JOHNSON SURGICAL VISION, INC.,
Petitioner,

v.
ALCON, INC.,
Patent Owner.
_____________

IPR2021-00898
Patent 9,622,913 B2
____________

Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
and JAMIE T. WISZ, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 325(d)
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I. INTRODUCTION
Petitioner filed a Petition (Paper 2, “Pet.”) requesting inter partes
review of claims 1–3, 7–11, 13–16, and 18–28 of U.S. Patent No. 9,622,913
B2 (Ex. 1001, “the ’913 Patent”). Patent Owner filed a Preliminary
Response requesting, inter alia, denial of review under 35 U.S.C. § 325(d)
(“Section 325(d)”). Paper 6 at 18–39 (“Prelim. Resp.”). With the Board’s
pre-authorization, Petitioner filed a Reply (Paper 9) and Patent Owner filed a
Sur-reply (Paper 10) “strictly limited to addressing issues” bearing on the
request for a discretionary denial under Section 325(d). Ex. 1020 (email
authorization). We base our factual findings exclusively on the information
presented in the Petition, Preliminary Response, Reply, and Sur-reply.
The Board may not institute an inter partes review unless the
information presented “shows that there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” 35 U.S.C. § 314(a). The Board has discretion to deny a request
for institution when the information presented shows a petitioner raises “the
same or substantially the same prior art or arguments previously presented to
the Office,” for example, during patent examination. 35 U.S.C. § 325(d).
For reasons stated below, we determine that Petitioner raises
substantially the same prior art or arguments presented to the Office during
examination of the ’913 patent. Further, Petitioner fails to show sufficiently
that the Examiners1 erred during examination in a manner material to the

1 We refer to the plural “Examiners” in this Decision because “[t]he ’913
patent issued after prosecution spanning more than three years, six [requests
for continuing examinations], and four Examiners.” Prelim. Resp. 1
(emphasis added); see generally Pet.; Reply (nowhere contesting that fact).
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patentability of any challenged claim. See Advanced Bionics, LLC v. MED-
EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
Feb. 13, 2020) (precedential). Accordingly, we exercise our discretion and
deny the Petition pursuant to Section 325(d).
A. Real Parties-in-Interest
The Petition indicates that Johnson & Johnson Surgical Vision, Inc.,
AMO Development, LLC, AMO Manufacturing USA, LLC, and AMO
Sales and Services, Inc. are real parties-in-interest. Pet. 71. Patent Owner’s
Mandatory Notice indicates that Alcon, Inc., Alcon Vision, LLC, and Alcon
Research, LLC are real parties-in interest. Paper 4, 1.
B. Related Matters
Both parties identify as a related matter co-pending district court
litigation in AMO Development, LLC v. Alcon LenSx, Inc., No. 1:20-cv-
00842-CFC (D. Del.). Pet. 71; Paper 4, 1.
Concurrently herewith, we issue a related decision in IPR2021-00899,
addressing Petitioner’s challenge against claims of U.S. Patent
No. 9,849,036.
II. BACKGROUND
A. The ’913 Patent (Ex. 1001)
The ’913 patent is titled “Imaging-Controlled Laser Surgical System.”
Ex. 1001, code (54). During cataract surgery, a surgeon uses a laser to
perform a capsulotomy step and a lysis step on a lens of an eye. Id. at 1:21–
53. During the capsulotomy step, the surgeon directs a “cutting laser beam
to form” a “capsulotomy cut” that transects the capsular bag encasing the
lens. Id. at 5:58–59; see, e.g., id. at Fig. 4A–4B (illustrating capsulotomy
cut 260-c). During the lysis step, the surgeon uses a laser to liquefy or
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fragment the clouded lens in preparation for removal via a capsulotomy cut.
Id. at 1:21–53. The surgeon may perform the capsulotomy and lysis steps in
either order, but regardless of the order selected, the first step creates
“bubbles” in the ophthalmic tissue that compromise the precision of the
second step. Id. at 1:61–2:25.
The claimed invention relates to “[a]n imaging-based laser system”
that addresses problems, described in the ’913 patent, associated with
excessive bubble formation that may occur during a capsulotomy step
performed on a lens that is misaligned or “tilted relative to an optical axis of
the laser system.” Id. at 12:34, 12:45–46; see id. at Figs. 6A–6H, 6:48–
12:16 (written description of the invention and associated figures). Of
critical importance to this Decision, the z-axis is the optical axis of the laser
system and a z-depth is a depth along that axis. Id. at 1:32–35, 5:14–41,
5:45–48, 5:67–6:5, 6:17–23, 6:59–66; 12:4–6 (written description), 12:44–
46 (claim 1). Lens tilt relative to the z-axis may occur, for example, when
the apparatus used to immobilize the eye during cataract surgery pushes the
lens sideways relative to the optical axis of the laser system. Id. at 6:24–30.
The ’913 patent describes a conventional capsulotomy step that sets
“the stage to illustrate the operation of the” claimed imaging-based laser
system. Id. at 5:14–15; see id. at 12:34–65 (claim 1). In the next two
subsections, we address, in turn, the description provided in the ’913 patent
of (1) a conventional solution that accounts for lens tilt during a
capsulotomy step, and (2) the claimed imaging-based laser system.
1. Description of a Conventional Capsulotomy Step
The ’913 patent describes a conventional capsulotomy step in which
the surgeon forms “high precision cuts” in ophthalmic tissue by directing
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laser pulses, having a power that exceeds a photo-disruption threshold,
toward target points in the tissue. Id. at 1:21–41. Laser pulses adjusted to
this “high value” power parameter disrupt ophthalmic tissue by inducing the
formation of bubbles, which “can weaken” the tissue sufficiently to allow
the surgeon to complete the actual capsulotomy cut in “a subsequent manual
procedure.” Id. at 1:21–41, 6:59–66. The formation of “a substantial amount
of bubbles” during the capsulotomy step, however, may undermine the
precision of a subsequent lysis step. Id. at 2:10–20.
An imaging-based laser system generates a scan-pattern from an
image of the eye that guides the surgeon’s selection of the target points over
which to direct the laser to form the bubbles that will weaken tissue in the
area where the surgeon will form the capsulotomy cut. Id. at 1:32–2:46. In
practice, during a conventional capsulotomy step, a cut-cylinder “is often
formed as a stack of bubble-circles, where the individual circles are created
by directing the laser pulses along a circular scan-pattern at a fixed z-depth
to cause photo-disruption, followed by the formation of a similar circle at a
slightly lesser z-depth” in the ophthalmic tissue. Id. at 5:67–6:5. In other
words, the surgeon may use a circular scan-pattern as a guide to direct “high
value” laser pulses, of a power exceeding the photo-disruption threshold, to
form “a stack of bubble-circles” at pre-determined z-depths relative to the
optical axis of the laser system. Id. at 1:32–35, 5:14–41, 5:67–6:5, 6:59–66.
That circular scan-pattern has a height or depth-range over which the
surgeon generates the stacked bubble-circles of a cut-cylinder. Id. at
Figs. 4A–4B. The capsulotomy cut, however, is an element distinct from the
cut-cylinder, although the cut ideally is placed where the cut-cylinder
intersects the lens capsule. Id. at 1:21–41 (describing a “subsequent manual
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procedure” in which the cut is completed after formation of a cut-cylinder
composed of bubble-circles). The ’913 patent illustrates and describes these
features of a conventional capsulotomy step. See id. at Figs. 4A–4B
(identifying “capsulotomy cut 250” as an element distinct from “cut-
cylinder 260-c”), 5:56–6:5 (describing a conventional capsulotomy step in
which “capsulotomy cut 250 is formed where the cut-cylinder 260-c
intersects the lens capsule 222”).
For purposes of this Decision, it is useful to keep in mind that the cut-
cylinder has a depth-range relative to the z-axis denoted in the ’913 patent
as the “Dcut.” Id. at Figs. 4A–4B. The Dcut is the depth-range of the scan-
pattern over which bubbles are formed in the ophthalmic tissue (“cut-
cylinder 260-c”) not necessarily the depth-range of the actual cut
(“capsulotomy cut 250”). Id. That fact becomes critically important when
we discuss Petitioner’s arguments pertaining to the limitation in claim 1 that
specifies a “tracking band” having a “lower boundary” of “non-uniform z-
depth,” which corresponds, not to the depth of the capsulotomy cut itself,
but to the lower boundary of the scan-pattern over which bubbles are formed
to weaken ophthalmic tissue. Id. at 12:44, 12:50–55 (claim 1); see id.
at 5:56–7:15 (written description provided in the ’913 patent, explaining the
meaning of the variable “depth-range Dcut”); see also id. at Figs. 4A–4B
(illustrating two examples of the “Dcut” for “cut-cylinder 260-c”).
The capsulotomy step is complicated when the lens of the eye has an
uneven shape or otherwise is tilted relative to the optical axis of the laser
system, a disadvantage explained in the ’913 patent by reference to
Figures 4A and 4B. Id. at Figs. 4A–4B, 2:10–20, 6:17–30, 11:5–26.
The ’913 patent illustrates examples of conventional circular laser scan-
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patterns in Figure 4A (aligned lens) and Figure 4B (tilted lens). Id. at 3:9–
10, 5:14–6:47. We reproduce below Figure 4A, which illustrates a
conventional scan-pattern for a lens aligned with the z-axis, which, in
Figure 4A, runs parallel to scanning circle 254. Id. at 5:15–21, 5:57–62.

Id. at Fig. 4A. Figure 4A illustrates a conventional laser scan-pattern for a
capsulotomy step where lens 220 is aligned with the optical axis of the laser
system. Id. at 3:9–10, 5:14–22. Figure 4A shows the depth-range (“Dcut”)
of cut-cylinder 260-c, which has a diameter selected to ensure complete
transection of capsular bag 222. Id. at 5:59–6:5. Figure 4A illustrates that,
“in the case of a well-aligned lens 220, the bubbles of cut-cylinder 260-c
introduce only a limited amount of scatter for the subsequent” lysis step,
because the depth-range over which bubble-circles are generated (“Dcut”) is
relatively small. Id. at 6:20–23.
Figure 4B in the ’913 patent, by contrast, illustrates a scan-pattern for
a capsulotomy step where lens 220 is tilted relative to the z-axis. Id.
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at Fig. 4B, 6:24–25. When the lens is tilted, the surgeon may form bubble-
circles along a greater depth-range, that is, “Dcut,” as compared to a non-
tilted lens, to generate a cut-cylinder deep enough to accommodate a cut that
is tilted to ensure transection of capsular bag 222. Id. As shown in
Figure 4B, reproduced below, in this conventional capsulotomy step,
capsulotomy cut 250 follows the tilt of lens 222. Id. at 5:14–6:47.

Id. at Fig. 4B. Figure 4B of the ’913 patent illustrates lens 220 in a tilted
position relative to the z-axis and, further, shows a conventional solution
that compensates for lens tilt by increasing the “Dcut,” that is, the depth-
range of “cut-cylinder 260-c,” to accommodate “capsulotomy cut 250,”
which follows the tilt of lens 220. Id. at 5:62, 6:24–47.
Figures 4A and 4B of the ’913 patent illustrate two examples of
depth-ranges over which the surgeon may generate the bubble-circles of a
scan-pattern to generate cut-cylinder 260-c. These figures illustrate how, by
increasing the depth-range of the cut-cylinder, the surgeon may compensate
for lens tilt by producing bubble-circles along a greater z-depth to
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accommodate a capsulotomy cut that follows the tilt of the lens. Compare
id. at Fig. 4A (illustrating a relatively small “Dcut” for a non-tilted lens),
with id. at Fig. 4B (illustrating a much larger “Dcut” for a tilted lens).
To be clear, Figure 4B describes a conventional solution for lens “tilt”
that employs a cylindrical scan-pattern, denoted cut-cylinder 260-c, which
has a lower boundary of uniform z-depth, but that is sufficiently deep to
accommodate capsulotomy cut 250, which “will follow this tilt” of lens 220
and fully transect capsular bag 222.2 Ex. 1006 ¶ 90 (Angeley).
The written description indicates that this conventional solution for
compensating for lens tilt may lead to as much as a six-fold increase in the z-
depth of bubbles as compared to a capsulotomy step performed on a non-
tilted lens. Ex. 1001, 6:35–47; see id. at 2:10–14 (“The amount of bubbles is
especially high if the lens is in a tilted position” relative to the z-axis.).
Stated somewhat differently, increasing the depth-range of the cut-cylinder
comes with a disadvantage, namely, an increase also in the amount of bubble
formation, because the cut-cylinder itself is “formed as a stack of bubble-

2 Petitioner repeatedly argues that the “tracking band” limitation of claim 1
(which requires “a tracking band” that has a lower boundary of non-uniform
z-depth (Ex. 1001, 12:44, 12:50–55)) is satisfied whenever a capsulotomy
cut follows the tilt of a tilted lens (see Pet. 26–30; Reply 2, 4). We reject that
argument because it conflicts with unambiguous disclosures in the ’913
patent that describe conventional “capsulotomy cut 250,” which follows the
tilt of the lens, yet employs a scan-pattern (“cut-cylinder 260-c”) having a
lower boundary of uniform z-depth. See Ex. 1001, Figs. 4B, 5B (figures),
5:14–6:47 (written description). Petitioner misreads claim 1 to require a cut
that has a non-uniform z-depth, although no claim term limits the z-depth of
the cut. Reply 2 (arguing, in connection with Palanker, that the capsulotomy
“cut has the claimed ‘non-uniform z-depth’”) (emphasis added); cf.
Ex. 1001, 12:44, 12:50–55 (specifying “a tracking band” having “a lower
boundary” that “has a non-uniform z-depth”).
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circles.” Id. at 5:67–61. If the capsulotomy step is performed before the lysis
step, in the case of a tilted lens, so “substantial” an “amount of bubbles” may
“undermine the precision of the cataract procedure” by “scattering of the
laser pulses” in “the subsequent lens fragmentation” step. Id. at 2:10–20.
A comparison of the uniform “Dcut” of “cut-cylinder 260-c” in
Figure 4A (aligned lens) with the uniform, but greater, “Dcut” of “cut-
cylinder 260-c” in Figure 4B (tilted lens) illustrates why “[t]he amount of
bubbles is especially high if the lens is in” the tilted position as illustrated in
Figure 4B. Id. at 2:13–14; compare id. at Fig. 4A (illustrating the relatively
small Dcut over which bubbles are formed when a lens is aligned with the z-
axis), with id. at Fig. 4B (illustrating the much greater Dcut required when a
lens is misaligned or tilted relative to the z-axis). We reproduce below
Figures 5A and 5B of the ’913 patent, which further illustrate that point. See
id. at 5:42–6:47 (describing these figures).

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Id. at Figs. 5A–5B. Figures 5A and 5B “illustrate traditional scan-patterns
for non-tilted and tilted lenses.” Id. at 3:11–12. Figure 5A (non-tilted lens)
and Figure 5B (tilted lens), respectively, correspond to Figure 4A (non-tilted
lens) and Figure 4B (tilted lens). The scan-patterns shown in Figures 5A
and 5B identify image 256 of an imaged layer of the eye, which the surgeon
evaluates to “decide where to direct the cutting laser beam to form
capsulotomy cut 250.” Id. at 5:57–59. These illustrations show image 252,
which “typically includes an image 256 of the imaged anterior capsule layer
of the lens 220 ‘unfolded’ along a scanning variable,” that is, “an angle
along the circumference of the scanning circle 254.” Id. at 5:42–45, 6:31–33.
When lens 220 is aligned with the z-axis, “image 252 typically
includes an image 256” that, when “‘unfolded’ along a scanning variable,”
as shown in Figure 5A, “is a flat line, indicating an essentially constant z-
depth” for the cut. Id. at 5:45–48. “In contrast to the non-tilted case” shown
in Figure 5A, however, “image 256 of the tilted imaged layer can exhibit
substantial sinusoidal oscillations” as shown in Figure 5B. Id. at 6:33–35.
When the lens is tilted relative to the z-axis, therefore, “the image 256 of the
tilted imaged layer can exhibit substantial sinusoidal oscillations” having an
“amplitude” in the range of “as much as 300–500 microns,” as shown in
Figure 5B. Id. at 6:33–36. In other words, a scan-pattern of increased depth-
range (“Dcut”) – involving more stacked bubble-circles – is required to
accommodate a cut that follows the tilt of the lens.
Figure 5B in the ’913 patent illustrates a conventional solution for
lens tilt that increases the “depth z (µ)” of the scan-pattern (denoted by black
dots in Figure 5B) as compared to the scan-pattern for a non-tilted lens
(depicted by black dots in Figure 5A). Id. at Figs. 5A–5B. That conventional
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solution for lens tilt accommodates a tilted capsulotomy cut by increasing
the depth-range of the scan-pattern, yet maintains a scan-pattern having a
lower boundary of uniform z-depth. Id. at Fig. 5B. That fact is important
because the challenges rest on Petitioner’s faulty premise that a tilted
capsulotomy cut means the tracking band (that is, the scan-pattern) must
have a lower boundary of non-uniform z-depth as specified in claim 1. See
supra 9 n.2; infra 37 n.7; see Ex. 1001, 12:44–56 (tracking band limitation).
2. The Claimed Imaging-Based Laser System
According to the written description of the invention provided in
the ’913 patent, the claimed invention pertains to an imaging-based laser
system that assists the surgeon “by imaging the eye” before performing the
actual capsulotomy cut. Ex. 1001, 3:50, 6:52–58; see id. at 1:32–41, 5:56–
6:5 (weakening ophthalmic tissue by directing high-power pulses along a
scan-pattern to form stacked “bubble-circles” enables the surgeon to
perform the actual capsulotomy cut in “a subsequent manual procedure).
The imaging-based laser system of the claimed invention supports “a
determination of a z-depth coordinate of the imaged layer” that corresponds
“to a scanning coordinate along an image-scan.” Id. at 5:20–21 (written
description); see id. at 12:47–49 (claim 1 specifying that feature of the
invention). “Based on the z-depth of the imaged layer, the surgeon can
decide where to direct the cutting laser beam to form the capsulotomy cut.”
Id. at 5:57–59.
Of critical importance to our analysis, claim 1 specifies a laser-
controller configured to “generate a tracking band within the cylindrical
scan pattern defining a cut to be made in the eye.” Id. at 12:44–55. Thus, the
“cut” and “the tracking band” are distinct features of the claimed invention.
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Id. The “tracking band” refers to the scan-pattern, which may be in the
shape of a cut-cylinder and guides the surgeon when directing laser pulses to
points in the ophthalmic tissue. See, e.g., id. Figs. 4A–4B, 5A–5B, 6A–6H,
1:21–41, 2:37–48, 5:67–6:5, 6:59–7:15 (making plain that the “cut” is not
the same as the “tracking band” over which the surgeon generates bubbles in
ophthalmic tissue).
The laser-controller of the claimed invention further is configured to
“cause a beam attenuator to control the laser-power parameter of the laser
pulses such that a laser power parameter of laser pulses in the tracking band
is above a photo-disruption threshold,” whereas “a laser power parameter of
laser pulses outside the tracking band is below” that threshold. Id. at 12:44,
12:59–65 (claim 1); see id. at Fig. 6B (reproduced infra 14) (reproducing
Figure 6, which illustrates these features of the invention).
In addition, the specified laser-controller is configured to “generate a
tracking band within a cylindrical scan-pattern defining a cut to be made in
the eye, wherein a lower boundary of the tracking band has a non-uniform z-
depth that varies according to the determined z-depths of the sequence of
points corresponding to the imaged layer.” Id. at 12:44, 12:53–55 (claim 1);
see id. at 5:15–21, 5:45–48, 6:17–18 (written description). That feature of
the claimed invention is illustrated in Figure 6B of the ’913 patent.
When assessing Figure 6B, it may be helpful to observe that the lower
boundary of the tracking band, that is, the band of darker dots labelled
“points with high laser-power,” has a non-uniform “depth z (µ).” Id. at
Fig. 6B. That stands in stark contrast to the uniform “depth z (µ)” of the
tracking band depicted in Figure 5B (reproduced supra 10), which illustrates
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a conventional solution for lens tilt. We reproduce below Figure 6B of
the ’913 patent, which illustrates the claimed solution for lens tilt.

Id. at Fig. 6B. Figure 6B illustrates “a scan-pattern along a circular scan with
a distance-dependent laser-power parameter.” Id. at 3:13–14. “[F]or those
points of the scan-pattern that lie within the tracking band 257, the laser
power is high – indicated by a thick line – whereas for those points that lie
outside the tracking band 257, the laser power is low.” Id. at 7:45–48.
As shown in Figure 6B, “some implementations of the laser system”
of the claimed invention allow the surgeon to “substantially reduce the
number of photo[-]disrupted bubbles” created during a capsulotomy step
performed on a tilted lens “by generating bubbles only in a narrow proximity
of the imaged layer” identified as tracking band 257. Id. at 6:48–51.
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B. Challenged Claims
Petitioner challenges claims 1–3, 7–11, 13–16, and 18–28 of the ’913
patent. Pet. 2. We reproduce below claim 1, which is the only independent
challenged claim.
1. An imaging-based laser system, comprising:
a laser-beam system, including
a laser engine, configured to generate a beam of laser pulses,
a beam attenuator, configured to modify a laser-power
parameter of the laser pulses, wherein the laser-power
parameter is one of a pulse energy, a pulse power, a pulse
length and a pulse repetition rate, and
a beam scanner, configured to scan the beam to points of a
cylindrical scan-pattern in an eye; and
an imaging-based laser-controller, configured to:
image a layer in the eye that is tilted relative to an optical
axis of the laser system,
determine z-depths of a sequence of points in the cylindrical
scan-pattern that correspond to the imaged layer in the
eye,
generate a tracking band within the cylindrical scan pattern
defining a cut to be made in the eye, wherein a lower
boundary of the tracking band has a non-uniform z-depth
that varies according to the determined z-depths of the
sequence of points corresponding to the imaged layer,
cause the beam scanner to scan the beam of laser pulses to
the points of the cylindrical scan-pattern, and
cause the beam attenuator to control the laser-power
parameter of the laser pulses such that a laser power
parameter of laser pulses in the tracking band is above a
photo-disruption threshold, and a laser power parameter of
laser pulses outside the tracking band is below the photo-
disruption threshold.
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Ex. 1001, 12:34–65. Each of the other challenged claims inherits, by direct
or indirect dependence on claim 1, the “tracking band” limitation. Id. at
12:50–55; see id. at 12:66–16:16 (claims 2, 3, 7–11, 13–16, and 18–28). Our
analysis of that limitation of claim 1, therefore, applies with equal force to
every challenged claim.
C. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–3, 7–11, 13–16,
and 18–28 on three grounds, as follows:
Ground 35 U.S.C. §3 Reference(s)
1 102 Angeley4
2 103 Angeley
3 103 Angeley and Palanker5

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (September 16, 2011), included revisions to Sections 102 and 103
that became effective on March 16, 2013. Because the ’913 patent issued
from an application filed before March 16, 2013, we apply the pre-AIA
versions. Ex. 1001, code (22) (indicating that the application that matured to
issue as the ’913 patent was filed on May 18, 2011). Neither party directs us
to information that indicates the result would change based on which version
of these provisions is applied.
4 Pub. No. US 2011/0202046 A1 (Ex. 1006). Petitioner asserts that “Angeley
is prior art under pre-AIA 35 U.S.C. § 102(e)(1) because it is a published
patent application filed on January 21, 2011, before the ’913 patent’s earliest
claimed priority date.” Pet. 17.
5 Daniel V. Palanker et al., Femtosecond Laser-Assisted Cataract
Surgery with Integrated Optical Coherence Tomography, 2 Science
Translational Medicine (Nov. 17, 2010) (Ex. 1009). Petitioner comes
forward with information that Palanker “was accessible to the public no later
than November 22, 2010.” Pet. 61; see Ex. 1015 (Declaration of Mr. Duncan
Hall, Records Request Processor at the Internet Archive); see also Ex. 1018
(Declaration of Professor Daniel V. Palanker).
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Pet. 2. Petitioner relies on the Declaration of Georg Schuele, Ph.D. Ex. 1004.
Patent Owner relies on the Declaration of Edward A. DeHoog, Ph.D.
Ex. 2001. Based on their statements of qualifications and curricula vitae, for
purposes of this Decision, we find that both Dr. Schuele and Dr. DeHoog are
qualified to opine about the level of ordinary skill in the art at the time of the
invention. Ex. 1004 ¶¶ 1–11 (Dr. Schuele’s statement of qualifications);
Ex. 1005 (Dr. Schuele’s curriculum vitae); Ex. 2001 ¶¶ 5–16 (Dr. DeHoog’s
statement of qualifications); Ex. 2002 (Dr. DeHoog’s curriculum vitae).
III. ANALYSIS
A. Level of Ordinary Skill in the Art
The level of ordinary skill in the art at the time of the invention is a
factual determination that provides a primary guarantee of objectivity in an
obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324
(Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).
In this Decision, we assess the asserted obviousness grounds only to the
extent necessary to resolve Patent Owner’s request that we exercise our
discretion and deny the Petition under Section 325(d).
Based on the information presented, we find the asserted prior art
itself is sufficient to demonstrate the level of skill in the art at the time of the
invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(the prior art itself can reflect the appropriate level of ordinary skill in the
art). To the extent a more precise definition is required, we adopt
Petitioner’s definition because, on this record, it appears consistent with the
disclosures of the asserted prior art and the written description of the
invention provided in the ’913 patent. Pet. 16 (Petitioner’s asserted
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definition of the ordinarily skilled artisan); see Prelim. Resp. 18 (reciting
that definition without adopting it or proposing an alternative definition).
B. Claim Construction
For petitions such as this one, filed after November 13, 2018, claims
“shall be construed using the same claim construction standard that would be
used to construe the claim in a civil action under 35 U.S.C. 282(b).” See
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under
that standard, the “words of a claim ‘are generally given their ordinary and
customary meaning,’” which is “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention, i.e.,
as of the effective filing date of the patent application.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
We construe terms in controversy only to the extent necessary to
resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party
proposes an express construction for any claim term. See Pet. 17; Prelim.
Resp. 59–60. We find no claim term requires express construction in order
to resolve whether to exercise our discretion and deny the Petition under
Section 325(d). We discuss the scope of certain claim terms as necessary to
our analysis of that issue, however, which we turn to in the next section.

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C. Discretionary Denial Pursuant to Section 325(d)
We apply a two-part framework to assess whether to exercise our
discretion and deny a petition as authorized under Section 325(d). First, we
consider whether the same or substantially the same prior art or arguments
previously were presented to the Office. If either condition is satisfied, we
assess whether the petitioner has demonstrated that the Office erred in a
manner material to the patentability of the challenged claims. Advanced
Bionics, Paper 6 at 8. A non-exclusive list of factors, set forth in Becton,
Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8
(PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), guides
our application of that two-part framework. Advanced Bionics, Paper 6 at 9.
Those factors include:
(a) the similarities and material differences between the asserted
art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art
evaluated during examination;
(c) the extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for
rejection;
(d) the extent of the overlap between the arguments made
during examination and the manner in which Petitioner relies
on the prior art or Patent Owner distinguishes the prior art;
(e) whether Petitioner has pointed out sufficiently how the
Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented
in the Petition warrant reconsideration of the prior art or
arguments.
Becton, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is
determined that the same or substantially the same art or arguments
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previously were presented to the Office, then factors (c), (e), and (f) relate to
whether the petitioner has demonstrated a material error by the Office.”
Advanced Bionics, Paper 6 at 10.
Patent Owner asserts that the Board should deny institution under
Section 325(d) because Petitioner presents substantially the same art or
arguments previously analyzed by the Office and fails to show that the
Office materially erred in issuing the challenged claims. Prelim. Resp. 18. In
particular, Patent Owner contends that the Examiners considered Angeley
and, further, that Palanker is cumulative of Angeley. See id. at 19–20. In
Patent Owner’s view, moreover, Petitioner fails to show material error by
the Office in the application of Angeley to the challenged claims. Id. at 20.
We address those arguments in detail below.
Factor (a): The similarities and material differences between the
asserted art and the prior art involved during examination
Petitioner asserts Angeley in every ground of unpatentability
identified in the Petition. Pet. 2. The parties agree that Angeley was before
the Office during the ’913 patent examination. See Pet. 1–2, 67–68; Prelim.
Resp. 1–2, 19–20 (Petitioner and Patent Owner, acknowledging Angeley
was before the Office during patent examination); see also Ex. 1001,
code (56) (references cited during patent examination, including Angeley).
Petitioner asserts that the Examiners “overlooked” or failed to
“appreciate” two disclosures in Angeley, but that argument does not show
sufficiently a material difference between Angeley, as presented to the
Examiners, and the reference as advanced in the Petition. Pet. 2, 15–16
(arguing that “the Examiner[s] did not appreciate” or “overlooked”
paragraph [0090] and Figure 15 in Angeley, but nowhere contending that
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Angeley, as advanced in the Petition, differs in any material respect from the
reference as considered during patent examination). Accordingly, on this
record, we determine, and Petitioner does not meaningfully contest, that
Angeley “previously” was “presented to the Office” within the meaning of
Section 325(d). This factor supports a decision to exercise our discretion and
deny institution of review.
Factor (b): The cumulative nature of the asserted art
and the prior art evaluated during examination
Petitioner advances only Palanker and Angeley in the section of the
Petition that identifies the challenge. Pet. 2. Palanker was not before the
Office during the ’913 patent examination. Id. at 70; Prelim. Resp. 34. We
first discuss, individually, the disclosures of Angeley and Palanker. We then
address the cumulative nature of those references, with a focus on whether
Palanker, with greater clarity or detail than Angeley, suggests a “laser
controller” configured to “generate a tracking band” that “has a lower
boundary” of “non-uniform z-depth” as specified in claim 1. Ex. 1001,
12:44, 12:50–55 (claim 1). Our analysis of that issue alone is sufficient to
resolve the dispute presented on this record. See Pet. 12–14, 56–66, 70;
Prelim. Resp. 2–4, 14–17, 19–20, 34–39; Reply 1–7; Sur-reply 1–3, 6–7 (the
parties’ arguments, pertaining to whether Palanker is cumulative to Angeley,
which focus on the specified “tracking band” limitation).
1. Angeley
Angeley recognizes problems that attend cataract surgery when a lens
is tilted relative to the optical axis of the laser system. Ex. 1006, Figs. 9, 10,
15, ¶¶ 6, 78, 90. Angeley proposes a solution for lens tilt that relies on a
scan-pattern having a constant depth-range, identified in the reference as
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“depth thickness 419,” to compensate for the “tilt.” Id. ¶ 78. That factual
issue was a “belabored” point of contention throughout the ’913 patent
examination and, ultimately, the Office resolved that issue in Patent Owner’s
favor. Prelim. Resp. 26 n.3 (citing the prosecution history).
The laser system disclosed in Angeley “scan[s] a laser through ‘a
cylindrical shape (extruded circle or ellipse).’” Id. at 24 (quoting Ex. 1006
¶ 78). That shape, at minimum, suggests the “cut-cylinder” scan-pattern
discussed at length in the ’913 patent. See Ex. 1001, Fig. 4B (cut-cylinder
260-c), 5:14–6:47 (written description of cut-cylinder); Ex. 1006, Fig. 9
(rectangular box 400B). Although Angeley describes using imaging
techniques to minimize the uniform depth thickness of the cylindrical scan-
pattern employed to guide the laser, the reference does not suggest varying
the depth of the lower boundary of that pattern relative to the optical axis of
the laser system. Ex. 1006 ¶¶ 78, 90.
On the contrary, as shown in Angeley’s Figure 9, the scan-pattern
(rectangular box 400B) has a constant depth thickness 419 relative to the
optical axis of the laser system. Id. at Fig. 9, ¶ 78 (illustrating and describing
“depth thickness 419” of the cylindrical scan-pattern that Angeley employs
“to take into account variations in the depth of the targeted capsule cut”); see
id. at Fig. 10 (illustrating the direction of the optical axis in Angeley’s laser
system). We reproduce below Angeley’s Figure 9.
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Id. at Fig. 9. Angeley’s Figure 9 illustrates a composite image of an eye in
which the scan-pattern, that is, rectangular box 400B, has a lower boundary
of uniform “depth thickness 419.” Id. ¶¶ 22, 78. Significantly, Angeley
proposes a scan-pattern that has a uniform “depth thickness 419” sufficient
to account for a “tilt of the capsule.” Id. ¶ 78 (uniform “depth thickness 419”
of the “cylindrical” scan-pattern accounts “for variations in the” z-depth “of
the targeted capsule cut,” including cuts that follow the “tilt of the capsule”).
Angeley’s Figure 15 “shows a tilted lens.” Id. ¶ 90. We reproduce
below Angeley’s Figure 15.

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Id. at Fig. 15. Figure 15 of Angeley illustrates “a cross-sectional schematic
of [an] eye showing a tilted capsulorhexis incision plane.” Id. ¶ 90.
Angeley’s paragraph [0090] explains that Figure 15 “shows a tilted lens”
and, further, indicates that when the lens is so tilted, “ideally the cut for the
capsule will follow this tilt.” Id. Neither paragraph [0090] nor Figure 15,
however, illustrates a scan-pattern, a cut-cylinder, or an actual cut. Nor does
either of these disclosures suggest a solution for lens tilt that involves
varying the z-depth of the lower boundary of a scan-pattern.
For example, paragraph [0090] of Angeley identifies, in Figure 15,
optical axis 422 and lens tilt 424 relative to that optical axis. Id. ¶ 90 (“axis
422 . . . is coincident to the system’s optical axis”). Angeley’s paragraph
[0090], however, contains no disclosure that suggests a solution for lens tilt.
Id. On this record, therefore, we find that paragraph [0090], at least
implicitly, relates back to the only solution for lens tilt discussed in Angeley,
namely, the disclosure provided in paragraph [0078]. Id. ¶ 90 (describing a
capsulotomy cut that “will follow” the “tilt” of the lens); see id. ¶ 78
(describing a solution that accounts for a “tilt of the capsule” by employing a
cylindrical scan-pattern having a constant “depth thickness 419”).
To be clear, Petitioner directs us to no disclosure in Angeley that
suggests varying the lower boundary of “depth thickness 419” (id. ¶ 78)
relative to the optical axis of the laser system. Pet. 26–29 & n.7 (citing
Ex. 1006, Figs. 8, 9, 15, ¶¶ 8, 42, 66, 67, 78, 90). On the contrary, Angeley
consistently discloses a scan-pattern that has a lower boundary of uniform
“depth thickness 419.” Ex. 1006, Fig. 9 (illustrating uniform depth
thickness 419 of rectangular box 400B), Fig. 10 (showing z-axis of the laser
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system relative to “target surface 510”), ¶¶ 78, 81, 82 (describing uniform
“depth thickness 419” as the depth-range of a “cylindrical” scan-pattern).
On this record, we determine that Angeley discloses a solution for
lens tilt in which the cut “follow[s] the tilt” where the uniform “depth of the
cut-cylinder (which corresponds to Angeley’s depth thickness 419) is
adjusted to cover the full extent of the difference between the high and low
points of the tilted lens capsule.” Prelim. Resp. 29; see Ex. 1006 ¶ 90
(describing a cut that “will follow this tilt”). That is essentially the same
prior art solution for lens tilt described and illustrated in the ’913 patent.
Ex. 1001, Figs. 4B, 5B, 5:14–6:47.
2. Palanker
Palanker bears a publication date nine months prior to that of
Angeley. Ex. 1009, 26 (Palanker, bearing the notation, “Published 17
November 2010”); Ex. 1006, code (43) (identifying Angeley’s publication
date as “Aug. 18, 2011”). Palanker was not before the Examiners during
the ’913 patent examination. See Ex. 1001, code (56).
Palanker describes a laser-assisted cataract surgery that involves
determining the placement of a capsulotomy cut “by imaging the anterior
segment of the eye with integrated optical coherence tomography.”
Ex. 1009, 2; compare Ex. 1006, Abstract, ¶¶ 44, 78, 90. The scan-pattern in
Palanker is “a spiral capsulotomy pattern” that ensures “intersection of the
incision with the anterior lens capsule in between.” Ex. 1009, 3–4. In other
words, like Angeley, Palanker describes a cylindrical scan-pattern to guide

6 We refer to page numbers added by Petitioner.
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the surgeon’s selection of target points for application of laser pulses having
sufficient power to form bubbles that weaken the ophthalmic tissue.
Petitioner argues that Palanker discloses a “tracking band” that has “a
lower boundary” of “non-uniform z-depth.” Pet. 62–64; Reply 6–7.
Petitioner directs us to no disclosure in Palanker, however, that mentions a
tilted lens, much less proposes a solution that compensates for lens tilt. See
Pet. 62–64; Reply 6–7. Instead, Petitioner directs us to Palanker’s Figure 3A.
We reproduce Figure 3A below.

Ex. 1009, 4 (Fig. 3A). Palanker describes Figure 3A as an “image of an
eye.” Id. Figure 3A includes a red rectangular shape identified as
“capsulotomy pattern (5)” atop “lens segmentation pattern (6).” Id.
Figure 3A also illustrates “cornea (1 and 2) and lens capsule (3 and 4).” Id.
Palanker does not state that Figure 3A is an image of a lens tilted
relative to an optical axis of a laser system. See generally Ex. 1009.
Petitioner and its witness, Dr. Schuele, advance that assumption based
entirely on the fact that the lens appears to lean slightly toward the left in
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this image. Pet. 62–64 (citing Ex. 1004 ¶¶ 206–210, Dr. Schuele’s opinions).
Petitioner directs us to no other disclosure in Palanker tending to establish
the location of the optical axis in Figure 3A. Id.
Patent Owner, by contrast, argues, “Although the red box labelled
as ‘5’” in Figure 3A “appears tilted relative to the boundaries of this image,
the teachings in Palanker clarify that neither the red box 5 nor the lens are
tilted relative to the optical axis of the laser system.” Prelim. Resp. 15.
Patent Owner keys its argument, on that crucial point, to objective evidence
in the disclosure of Palanker. Id. at 14–17, 34–39; see Ex. 2001 ¶¶ 61–64,
91–94 (Dr. DeHoog’s opinions and supporting citations to Palanker).
For example, Patent Owner directs us to information that Palanker’s
Figure 3A “includes regions of higher intensity (appearing in the image as
white areas),” which “are characteristic of the higher intensity scattering
expected along the optical axis of the imaging system.” Prelim. Resp. 16;
Ex. 2001 ¶ 63. Patent Owner’s annotated version of Figure 3A, which we
reproduce below, shows those white areas.

Prelim. Resp. 17. The above image is Patent Owner’s annotated version of
Palanker’s Figure 3A, which is an image of an eye. Ex. 1009, 4 (description
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of Figure 3A). Patent Owner annotates Figure 3A to add a purple line that
bisects, on the perpendicular, capsulotomy pattern (5) and lens segmentation
pattern (6). The purple line added by Patent Owner also bisects three white
areas that appear in this image. In Patent Owner’s view, the purple line
reflects the optical axis of the laser system. Patent Owner points out that the
lens, depicted in Figure 3A, is not tilted relative to the z-axis, as evidenced,
for example, by the position of higher intensity scattering regions (indicated
by the white areas in Figure 3A). Prelim. Resp. 16; Ex. 2001 ¶ 63.
In addition, Patent Owner advances Palanker’s description of “the
capsulotomy pattern as a ‘spiral pattern . . . applied from posterior to
anterior, thereby ensuring intersection of the incision with the anterior lens
capsule in between.’” Prelim. Resp. 17 (quoting Ex. 1009, 4–5); Ex. 2001
¶ 64. Patent Owner then directs us to Palanker’s Figures 3B and 3C, which
show that Palanker’s capsulotomy scan-patterns, in top view, are circular in
shape. Prelim. Resp. 15–16; Ex. 1009, 5 (Figs. 3B–3C); Ex. 2001 ¶ 62. We
reproduce below Palanker’s Figure 3B.

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Ex. 1009, 4 (Fig. 3B). Palanker’s Figure 3B is a “[v]iew of the eye via” a
“near-infrared video camera, with overlaid guidance lines indicating a
planned capsulotomy pattern.” Id. Those overlaid guidance lines are circular,
indicating “a spiral capsulotomy pattern.” Id.
Patent Owner also relies on Palanker’s Figure 3C, reproduced below.

Id. at 4 (Fig. 3C). Figure 3C from Palanker is a “[t]op view of the circular
capsulotomy pattern, a cross-pattern for lens fragmentation, and the nucleus
fragmentation pattern.” Id.
In Patent Owner’s view, Figures 3A–3C, taken together with
Palanker’s written description of a spiraling scan-pattern, illustrate that
“Petitioner’s interpretation of Palanker’s Figure 3A is incorrect: Palanker
does not disclose a ‘tilted red box 5’ or a ‘tilted lens.’” Prelim. Resp. 17
(citing and quoting Ex. 2001 ¶¶ 61–64; Pet. 13); see Ex. 1009, 3–4
(describing and illustrating Palanker’s scan-pattern). “[T]he red box labelled
as ‘5’ appears tilted” in Figure 3A, according to Patent Owner, only “relative
to the boundaries of” the optical coherence tomography image, and neither
the red box nor the lens depicted is “tilted relative to the optical axis of the
laser system.” Prelim. Resp. 15 (citing Ex. 1009, 4; Ex. 2001 ¶ 62).
Patent Owner advances a side-by-side comparison of annotated
versions of Palanker’s Figure 3A and Angeley’s Figure 9. Sur-reply 7.
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Patent Owner submits that, as shown in this comparison, neither reference
suggests the specified tracking band of claim 1, because in both references,
the lower boundary of the scan-pattern, which, in this side-by-side
comparison, corresponds to the lower edge of the red box in each figure, has
a uniform z-depth relative to the optical axis of the laser system. Id. at 6–7;
see Prelim. Resp. 14–17, 34–38, 53–57 (similar argument). We reproduce
below Patent Owner’s side-by-side comparison.

Sur-reply 7. The above comparison figure shows annotated versions of
Palanker’s Figure 3A (on the left) and Angeley’s Figure 9 (on the right).
Patent Owner annotates Figure 3A to include a purple line that, in Patent
Owner’s view, corresponds to the optical axis of Palanker’s laser system. Id.
at 6–7. Patent Owner annotates Figure 9 by tilting the edge of the figure
leftward and superimposing a red line around box 400B. In Patent Owner’s
view, this comparison figure shows that “Palanker’s red box 5 is no different
from Angeley’s box 400B in Figure 9, which the Office already considered”
during the ’913 patent examination. Id.
On this record, we determine that Petitioner does not show
sufficiently where the optical axis of Palanker’s laser system lies in
Figure 3A. Pet. 62–64 (citing Ex. 1004 ¶¶ 206–210). Patent Owner casts
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significant doubt on the adequacy of Petitioner’s information, in that regard,
by directing us to evidence that the purple line in annotated Figure 3A
(reproduced supra 27) corresponds to that axis. Prelim. Resp. 17, 35, 56.
Against that backdrop, relatedly, we determine that Petitioner fails to
demonstrate adequately that Palanker’s Figure 3A shows a lens tilted
relative to an optical axis of the laser system. In reaching that determination,
we take account of Petitioner’s contention that “two axes of the red shape
labeled ‘1’ in Palanker’s Figure 3B, measure a major axis of 4.9 mm and a
minor axis of 4.8 mm, respectively.” Reply 7. We take account also of
Petitioner’s further contention that “such a seemingly slight difference
indicates a meaningful tilt, given the relationship (cos-1) between the ratio of
the axes and the tilt.” Id. Both of those contentions rest on an unsupported
assumption about where the optical axis lies in Figure 3B. Id. Both,
moreover, consist of bare attorney argument, which, contrary to Petitioner’s
view, is ineffective to create a genuinely disputed issue of material fact
about whether the “slight difference” observed by counsel, in fact, “indicates
a meaningful tilt.” Id. (“[T]his fact-intensive analysis is best reserved for an
instituted proceeding”).
3. Cumulative Nature of Palanker and Angeley
Petitioner relies on Palanker “solely for its alleged teaching of the
claimed ‘tracking band.” Prelim. Resp. 2; see Pet. 62–64. In this subsection,
therefore, we resolve whether Palanker discloses, with greater clarity or
detail than Angeley, a solution for lens tilt that includes the specified
“tracking band” having “a lower boundary” of “non-uniform z-depth.”
Ex. 1001, 12:50–55. As an initial matter, we observe, the parties agree that
Palanker “discloses the commercial embodiment of Angeley’s laser-based
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system for cataract surgery.” Pet. 65; Prelim. Resp. 37. Further, “both arise
from the same company, share the same authors, and describe the same
laser cataract surgery system.” Pet. 65–66 (emphasis added). Those facts,
standing alone, tend to support Patent Owner’s view that Palanker is “far
from new compared to what the Office already considered when reviewing
Angeley.” Prelim. Resp. 2.
The parties agree, moreover, that Angeley’s Figure 15 illustrates
optical axis 422 and lens tilt 424. Pet. 10; Prelim. Resp. 26. Angeley
explains, “The tilt of this axis 424 can be seen relative to an axis 422
defined by the center of the iris and coincident to the system’s optical axis.”
Ex. 1006 ¶ 90 (emphasis added). On this record, therefore, we find Angeley
describes a lens tilted relative to optical axis 422. Id. For reasons explained
above in our discussion of Angeley’s disclosure, we determine that Angeley
suggests only one solution to compensate for lens tilt, and that solution
involves generating a cut cylinder of uniform depth relative to the z-axis
(id. ¶ 78, “depth thickness 419”) that is great enough to accommodate a cut
that “will follow” the lens “tilt” (id. ¶ 90) – that is, the same prior art
solution discussed and illustrated in the ’913 patent. Compare id. at Figs. 9,
15, ¶¶ 78, 90, with Ex. 1001, Figs. 4B, 5B, 5:15–6:46.
Tellingly, Petitioner directs us to no disclosure in Palanker that
mentions the word “tilt,” discloses a solution for lens tilt, or suggests a
“laser-controller” configured to “generate a tracking band” having “a lower
boundary” of “non-uniform z-depth” as specified in claim 1. Ex. 1001,
Figs. 6A–6H, Fig. 7, 6:59–10:11 (written description), 12:44, 12:50–55
(claim 1). On this record, we determine that Petitioner does not explain
adequately how or why Palanker describes the “tracking band” of claim 1
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with any greater clarity or detail than Angeley. Id. at 12:50–55; see Pet. 12–
14, 60–64; Prelim. Resp. 2–4, 14–17, 19–20, 34–39; Reply 1–7; Sur-reply
1–3, 6–7. Accordingly, we determine that Palanker is cumulative of
Angeley. Compare Ex. 1009 (Palanker, nowhere describing a solution that
accounts for lens tilt), with Ex. 1006 ¶¶ 78, 90 (Angeley, describing a
conventional solution for lens tilt). This factor supports a decision to
exercise our discretion and deny institution of review.
Factor (d): The extent of the overlap between the arguments
made during examination and the manner in which petitioner
relies on the prior art or patent owner distinguishes the prior art
Petitioner argues that Angeley (or Palanker, which is cumulative of
Angeley) discloses the “tracking band” of claim 1. Ex. 1001, 12:50–55
(tracking band limitation); Pet. 26–30, 62–64. Patent Owner counter argues,
“Petitioner wants a do-over” of the precise issue that was the focus of an
“extensive examination.” Prelim. Resp. 1, 21. We agree with Patent Owner
that the Office previously considered, and resolved in Patent Owner’s favor,
the question whether Angeley discloses or suggests the “tracking band”
limitation of claim 1. Ex. 1001, 12:50–55; see, e.g., Prelim. Resp. 23 (citing
Ex. 1003, 444, 815–818, 827–829, 868–871, 876, 925–927, 935, 998, 1013–
1014, 1054, 1083, 1108, 1115, 1145–1147, 1154–1158 (prosecution
history)). The arguments made during examination, and those advanced in
the Petition, substantially overlap. See Pet. 26–30, 62–64. This factor
supports a decision to exercise our discretion and deny institution of review.
Because each of factors (a), (b), and (d) weighs in favor of a
discretionary denial under Section 325(d), we determine that the same or
substantially the same art or arguments presented in the Petition previously
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were before the Office. Accordingly, in the next subsections, we assess
factors (c), (e), and (f), which inform our decision whether Petitioner
demonstrates adequately that the Examiners materially erred during patent
prosecution by allowing the challenged claims to issue over Angeley.
Factor (c): The extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for rejection
Patent Owner directs us to information that the ’913 patent
examination spanned “more than three years” and, further, that Angeley was
the focus of “seven rejections, two interviews, two advisory actions, and a
pre-appeal conference.” Prelim. Resp. 1; see id. at 26 n.3 (citing Ex. 1003,
826–828, 934–936, 1013–1016, 1145–1147, 1155–1157) (prosecution
history)). Petitioner does not contest that characterization of the patent
examination. See Reply 1–7. On this record, we agree with Patent Owner
that the Office previously conducted an “extensive examination of Angeley”
during prosecution. Prelim. Resp. 1. This factor supports a decision to
exercise our discretion and deny institution of review.
Factor (e): Whether petitioner has pointed out sufficiently
how the examiners erred in evaluation of the asserted prior art
Petitioner directs us to no persuasive evidence that the “four
Examiners” involved in the “extensive examination” of Angeley (Prelim.
Resp. 1) erred by failing “to fully consider” Angeley’s paragraph [0090] or
Figure 15 (Pet. 67–69). Patent Owner, by contrast, directs us to persuasive
evidence, within the four corners of the prosecution history, supporting a
“reasonable inference that at least one of the four Examiners” involved in
the patent prosecution undertook to read the “entire disclosure” of Angeley
to assess “the reference as a whole.” Prelim. Resp. 1, 21.
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For example, a summary of an interview with the applicant on July 2,
2015, indicates an “Examiner will review Angeley to determine whether
there is sufficient suggestion in Angeley to construe ‘3-dimensional path for
the cutting’ to include local variations in depth.” Id. at 21 (quoting Ex. 1003,
967) (emphasis omitted). Not once, but three times, that Examiner expressed
an intention to review Angeley in its entirety. Id. at 21–22 (quoting
Ex. 1003, 967 (twice stating the Examiner “will review” Angeley), 876 (the
“Examiner will reconsider” Angeley)). That same Examiner, thereafter,
referred to Angeley’s disclosure “considered as a whole” or “read in its
entire[t]y,” which directly conflicts with Petitioner’s suggestion that the
Examiner failed to carry out the stated intention to review Angeley’s full
disclosure. Id. at 22 (quoting Ex. 1003, 1115, 1154) (emphasis omitted).
“If Petitioner were indeed correct that the Office did not consider”
Angeley’s paragraph [0090] or Figure 15, that would mean four Examiners,
“while repeatedly straining to piece together evidence from within a single
reference to support an argument that Angeley” discloses the specified
tracking band, “failed to find the very thing [they] were looking for.” Prelim.
Resp. 23; see Ex. 1003, 1115–1116, 1123 (references to the “generalized” or
“general” teachings of Angeley in the prosecution history). In that regard,
Angeley’s paragraph [0078] was “the central focus of at least sixteen
correspondences during prosecution of the ’913 patent.” Prelim. Resp. 23–
24 (citing Ex. 1003, 444, 815–818, 827–829, 868–71, 876, 925–927, 935,
995, 103–1014, 1054, 1083, 1108, 1115, 1145–1147, 1154–1158
(prosecution history)). Patent Owner argues, reasonably on this record, that
“it strains credulity to suggest that none of the four Examiners that
considered Angeley chose to search” the reference “for the word ‘tilt,’”
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which would have led directly to paragraph [0090] and its description of
Figure 15, in addition to paragraph [0078]. Id. at 23. Further, as Patent
Owner observes, where Angeley’s disclosure was a focus of examination,
“[t]he omission of a citation to paragraph [0090] speaks louder to its
irrelevance than to any material error on the part of the Office.” Id. at 20.
For reasons explained above in our discussion of Angeley’s
disclosure, we agree with Patent Owner that paragraph [0090], at best, is
duplicative of “the primary portion of’ Angeley” that describes a solution for
lens tilt, namely, paragraph [0078]. Id. at 23. Neither paragraph [0090] nor
Figure 15, which Petitioner advances in the Petition, describes a scan-pattern
that accounts for lens tilt, whereas paragraph [0078] and Figure 9, which
were the focus of examination, describe a scan-pattern that accounts for “tilt
of the capsule.” Compare Ex. 1006 at Fig. 15, ¶ 90, with id. at Fig. 9, ¶ 78;
see Prelim. Resp. 24–34 (Patent Owner’s information on that point).
We next address Petitioner’s serious allegation that Patent Owner
misrepresented the disclosure of Angeley to the Office during the ’913
patent examination. Pet. 69. Petitioner alleges that the Examiners overlooked
Angeley’s paragraph [0090] and Figure 15 as a direct result of Patent
Owner’s “misrepresentation that paragraph [0078] ‘is the only passage of
Angeley that describes how cut depth is determined; nowhere does Angeley
suggest or contemplate another way of accounting for lens tilt.’” Pet. 69
(citing Ex. 1003, 1146, 1157) (emphasis omitted). Based on the information
presented, and for reasons set forth above in our discussion of Angeley’s
disclosure, we find Petitioner does not show sufficiently that this statement
is a “misrepresentation.” Id. “Petitioner’s arguments amount to a
disagreement with Patent Owner” over issues squarely addressed during an
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examination in which “[n]othing about” Angeley “was concealed from the
Examiner[s].” Sur-reply 5 (quotation omitted, alteration in original). On this
record, we find no merit in Petitioner’s contention that Patent Owner
misrepresented Angeley’s disclosure to the Examiners during prosecution.
Pet. 69.
As Patent Owner observes, “[T]he Office’s decision to allow the
patent over Angeley after years of prosecution and a pre-appeal conference
underscores the thoroughness of the examination and the duplicity of
paragraph [0090]” over the content of paragraph [0078]. Prelim. Resp. 30.
We agree with Patent Owner that Petitioner “ascribes additional meaning to
the general statements of paragraph [0090] where none is warranted.”
Prelim. Resp. 29; see Pet. 26–30.7
Petitioner does not show sufficiently that the Examiners overlooked in
Angeley’s disclosure a solution for lens tilt contained in paragraph [0090] or
Figure 15. Pet. 17–62, 67–70. Accordingly, as Patent Owner observes,
Petitioner does not demonstrate adequately how or why “the Office erred in
a manner material to patentability.” Prelim. Resp. 33 (quoting Advanced
Bionics, Paper 6 at 9). This factor supports a decision to exercise our
discretion and deny institution of review.

7 Petitioner also wrongly asserts that Patent Owner “confirmed during
prosecution that a tilted capsulotomy has a non-uniform z-depth.” Pet. 27–28
n.8. The material quoted by Petitioner shows only that Patent Owner
described “the laser controller” of the claimed invention as “configured to
‘generate a tracking band’” that has “a lower boundary” of “non-uniform z-
depth” as specified in claim 1. Id.
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Factor (f): The extent to which additional evidence and facts presented in
the petition warrant reconsideration of the prior art or arguments
Even “[i]f reasonable minds can disagree regarding the purported
treatment” of Angeley by the Office during patent examination, a trial
focused on resolving whether Angeley suggests the specified tracking band
“would be an inefficient use of Board resources,” given the extent to which
that same issue previously was considered by the Office. Prelim. Resp. 30,
33. The issue was the subject of an “extensive examination” spanning three
years and four Examiners. Id. at 1; see id. at 23–24 (citing Ex. 1003, 444,
815–818, 827–829, 868–871, 876, 925–927, 935, 998, 1013–1014, 1054,
1083, 1108, 1115, 1145–1147, 1154–1158 (prosecution history)). No other
information presented warrants a reconsideration of substantially the same
art or arguments previously presented to the Office during examination. See
generally Pet. This factor supports a decision to exercise our discretion and
deny institution of review.
IV. CONCLUSION
Each of factors (a)–(f) discussed above supports a decision to exercise
our discretion and deny institution of review. On this record, therefore, we
determine that Petitioner raises substantially the same prior art or arguments
previously presented to the Office and, further, has not demonstrated
adequately that the Office erred in a manner material to the patentability of
the challenged claims. Advanced Bionics, Paper 6 at 8. Taking a holistic
view of the circumstances presented, we exercise our discretion under
Section 325(d) and do not institute an inter partes review.

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V. ORDER
It is
ORDERED that the Petition is denied and no inter partes review is
instituted.

For PETITIONER:

Michael Morin
Giri Pathmanaban
Jonathan Strang
LATAM & WATKINS LLP
michael.morin@lw.com
giri.pathmanaban@lw.com
jonathan.strang@lw.com

For PATENT OWNER:

Gregg LoCascio
W. Todd Baker
Noah Frank
Kristen Reichenbach
KIRKLAND & ELLIS LLP
glocascio@kirkland.com
todd.baker@kirkland.com
noah.frank@kirkland.com
kristen.reichenbach@kirkland.com